Section 46(1)(b) - Registrar's decision set aside. Proceedings returned to the Registrar

Points Of Interest

As described

Summary

The applicant for revocation applied on 10 November 2003 and the Registrar sent a copy of the application to the registered proprietor at its registered address. No response was received and the Registrar treated the application as unopposed. The Registrar issued his written decision on 12 March 2004 allowing the request for revocation. [Note: This decision was not issued in the BL series]

Subsequently a Mr R A Golightly of LookC Ltd wrote to the Registrar to say that the registered proprietor had changed its name to LOOKC Ltd and wished to appeal the Registrar’s decision to the Appointed Person on the grounds that it had not received notification of the application for revocation. Proof of use of its mark could be provided and it intended to use the mark in future. The applicant wrote to say that the appeal should be dismissed as it was the proprietor’s own fault if changes had occurred which should have been recorded on the Trade Marks Register.

The Appointed Person had a hearing to consider the appeal and the proprietor was represented by Mr S J Golightly and the Registrar by Messrs Knight and Bader. The applicant was not represented.

As regards notification about the application for revocation it was established that while the registered proprietor had changed its name, it had not changed its registered address. The Post Office confirmed that it had not been able to deliver the relevant package but had posted a notification that the package was available for collection at the local sorting office. Additionally, there had been correspondence between the applicant and the registered proprietor prior to the launching of the revocation proceedings and there had been no difficulty about the receipt of correspondence. Nevertheless, the registered proprietor maintained that it had not received notification either through fault or oversight and asked that it be allowed to defend the registration. Some evidence of use of the mark was provided to the Appointed Person.

Appeal allowed to the extent that the Appointed Person decided to set aside the Registrar’s decision because of an irregularity in procedure in that the parties had not been offered the opportunity of being heard or to make written submissions, before the Registrar issued his decision.

As regards the appeal about receipt of the notification of the Revocation this was dismissed on the basis that the notification of Revocation had been properly sent to the registered proprietor by the Registrar. If confusion had occurred because of a change of name or the notification was lost by the proprietor, this was not the fault of the Registrar.

The Appointed Person ordered that the proceedings should proceed as follows:

The registered proprietor will be allowed a period of 28 days to file evidence of use of its mark in proper form or reasons for non-use.

If the registered proprietor files its evidence, a copy will be sent to the applicant. The applicant should have 28 days to say that it consents to the appeal being allowed or not. If the applicant consents then the appeal will be allowed without a further hearing.

If the applicant consents, the evidence of use or reasons for non-use will be admitted under Rule 31(8) on the basis that (i) the applicant should have three months in which to file evidence in answer. The registered proprietor would then have three months to file evidence in reply.

If one applicant does not consent to the appeal being allowed the case would be listed for a further hearing before the Appointed Person.

Costs reserved to await outcome. If no further hearing necessary a period of fourteen days would be allowed for written submissions from the parties.